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Domain Names
Domain Names usually fall under the Trademark area of IPR laws. Actors: *ICANN (Internet Corporation for Assigned Names and Numbers). Non-profit, CA-based. Organizes administration of domain names and IP numbers. Established in 1998. Previously done by IANA (US Gov.) *Registries **ccTLD. Country Code Top Level Domain. Administered by government or private actors. **gTLD. Generic Top Level Domain. .com, .net etc. Handled by companies such as Verisign *Registrar **Accredited agents that can register doman on behalf of customers/applicants. 616 in total. *WIPO (World Intellectual Property Organization) **Creating a international framework and rules regarding domain names disputes since the internet is boundaryless **47 ccTLDs use WIPO for dispute resolution Domain names were usually given out in Landrush fashion (first to file). Nowadays when introducting a new TLD there is first a sunrise period followed by landrush. During sunrise applicants with registered trademarks or company names are given priority. ccTLD can have restrictions about geographical connection between applicant and TLD or content and TLD. Hard to enforce. Conflicts with domain names: *Cybersquatting. Registering, selling or using a doman with the intent of profiting from the goodwill of someone's trademark *Typosquatting. Registering and using a domain name with the intent of drawing traffic on a common misspelling of the original site. Problems: *Domain names are cheap. Usually handled on a first come first serve basis. *There's little to no examination of applicants. No requirement on registrars to ensure that trademarks and such are owned by applicant *Identical trademarks may coexist, but domain names are unique *gTLDs are global and does not exist within a single jurisdiction. The sunrise procedure attempts to remedy this. International Treaties: *The Paris Convention. Well-known trade marks shall be protected against the registration or the use of a trade mark which constitutes a reproduction, animation or translation of that mark, liable to confusion (identical or similar goods). *TRIPS. Extends the Paris convention protection to services and dissimilar goods and services EU law: *Trademark Directive, article 5(2), and Community Trademark regulation (trademark registered or pending in the EU as a whole), article 8(5): "Protection against any sign which is identical with, or similar to, the trademark in relation to goods or services which are not similar to those for which the trademark is registered, where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark" *Cleartext: Protection against any sign with similarity to the trademark but not necessarily regarding the same goods and services if the sign is detrimental or takes unfair advantage of the distinctive character or reputation of the trademark *European Court of Justice case C-292/00 (Davidoff v. GOFKID) states that art. 5(2) also applies to identical goods or services. International Treaties (apart from the Paris convention): *WIPO Join Recommendation Concerning Provisions on the Protection of Well-known Marks: ”A domain name shall be deemed to be in conflict with a well-known mark at least where that domain name, or an essential part thereof, constitutes a reproduction, an imitation, a translation, or a transliteration of the well-known mark, and the domain name has been registered or used in bad faith." UDRP (Uniform Domain name Dispute Resolution) *WIPO established First Internet Domain Name Process in 1998 for recommendations regarding issues with domain names, including disputes *Uniform across general top-level domains. ccTLDs may adopt it aswell. *Cheap and quick compared to court litigation. 1-5 domains, 1 panelist: 1500 EUR, 3 panelists: 4000 EUR *Complainant must prove **that disputed domain is identical with, or confusingly similar to trademark, and **that respondent does not have right or legitimate interest of the domain, and **that respondent registered the domain in bad faith *Only remedy is to transfer domain. No fines or penal punishment. *Decisions may be appealed to court *No legitimate interest: **Registered domain is someone else trademark and company name **Registrant has no obvious reason for selecting the name **Registrant uses website for sale of product not supplied by holder of trademark **Registration appears to be for purposes of blocking the trademark holder's own registration